From a US university IP policy:
Federal law and regulations provide that the University has the right to retain title to any inventions conceived or made in whole or in part during federally funded grants and contracts….. The following is a summary of the most relevant provisions of the law.
1. The law gives a university or its designated patent management organization the right to retain ownership of inventions made in performance of all federal grants and contracts unless otherwise stated in the individual funding agreement.
This summary of Bayh-Dole gives the impression that the purpose of Bayh-Dole is to give universities the right to take ownership of inventions from inventors. As we now know from Stanford v. Roche, the law deals with the relationship between federal agencies and contractors, not the relationship between contractors and the contractors’ employees. The ownership portion of a university IP policy in dealing with its employees is not disturbed by federal funding. The condition of federal funding is that employees make commitments to protect the government’s interest in inventions. How the university comes by ownership is *not* a function of federal laws or regulations. 35 USC 200ff and 37 CFR 401 concern agency contracting with universities. Universities are not directly subject to the Bayh-Dole or the regulations. The universities agree to the terms and conditions of each funding agreement, including the patent rights clause as established by the agency in compliance with the law and regulations.
The law provides requires agencies to allow contractors the right to elect to retain title to inventions to which the university otherwise acquires title in a conventional way.
Consider this: who is it that decides to request federal funds for research? Is it a university administrator, who then assigns faculty to the task? or is a principal investigator, who then enlists administrators to help with proposal preparation and grant accounting? Clearly, it is the latter. Investigators write proposals to federal agencies, and know the terms and conditions. The university in accepting the funds is confirming a decision already made by investigators that they will protect the government’s interest in their inventions. It is important to recognize that investigators make the decision on behalf of the university, no matter what the university might say in policy about delegation of authority.
The only thing that federal funding requires of investigators is the (f)(2) agreement–disclose, sign paperwork for patent applications, sign paperwork to establish the government’s rights. These are things that investigators agree to as a condition of funding, and they do it with regard to the federal funding agreement. The (f)(2) agreement is not *with* the university. It is an agreement with the government. Because the university is required to require this agreement, the university cannot at the same time require other agreements with these same investigators that conflict with the (f)(2).
Nothing in Bayh-Dole requires a university to require ownership. A university could have a policy that made it entirely voluntary for inventors of inventions made with federal support to assign to the university. This is entirely consistent with Bayh-Dole. If assignment to the university were voluntary, then when a subject invention is reported, the university would ask the inventors about their intentions. If the inventors chose to assign to the university, then they and the university could work out the arrangements, the university could then elect to retain title, file patent applications, and do the other things agreed to in the funding agreement’s patent rights clause and the arrangement under which it received assignment from the inventors.
If however the inventors declined to assign to the university, then the university would notify the agency that it declined to retain title, and the matter would then be between the investigators and the agency. The agency could request title under the (f)(2) agreement, and could then file patent applications or have the invention enter the public domain. Alternatively, on a case by case basis, the agency could permit the inventors to retain title, with the minimum conditions set out in 37 CFR 401.9.
This discussion aims to show that Bayh-Dole does not require university ownership, and a university does not have to have a policy requiring assignment in order to comply with Bayh-Dole. A university may impose a policy requiring assignment, but the basis for doing so is not federal law or regulations. The law neither mandates assignment nor grants the university the right to take ownership from inventors. The responsibility and impetus for a compulsory policy on ownership is entirely with the university’s own governance–its administrators, faculty, and legal counsel.
With that understanding, then, what *is* the motivation for university patent administrators to be so fixate on compulsory ownership of inventions made with federal support? Is it the money to be made from licensing? Is it a love of order? Is it job protection? Is it expansion of little empires? Is it a sincere belief that inventors are inept, selfish, and gullible and someone has to protect the public and the rest of the university from them? Is it a sincere belief that national innovation works best when all research inventions pass through the hands of administrators? Or is it just a thorough misunderstanding of the law? Have I left something off the list of possible motives? Are any of these compelling as a national policy on research innovation? As an expression of the values of university research?
I have yet to see a thoughtful discussion of why compulsory ownership policies were so bad for the federal government but apparently so good for universities operating similar bureaucracies. Is it just that university administrators are more ready to offer exclusive licenses to patent speculators? Is that all we have underlying this drive for uniform, compulsive university IP policies?
Is any US university forward thinking enough to go to a voluntary assignment policy for federally funded inventions? I think working in such a tech transfer office would be *so very cool*. Imagine, to be chosen rather than always taking. That’s an innovation relationship worth working for.